USPTO Patents Application 10597633

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS
P.O. Box 1450

Alexandria, Virginia 22313-1450
www.uspto.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

10/597,633

07/06/2007

Omer Einav

34651

4237

67801 7590 05/14/2012

MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215

EXAMINER

THANH, QUANG D

PAPER NUMBER

3771

MAIL DATE

05/14/2012

DELIVERY MODE

PAPER

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

\SIIIK*& ^lUtlwf f will f If ffCIf y

Application No.

10/597,633

Applicant(s)

EINAV ET AL.

Examiner

Quang D. Thanh

Art Unit

3771

~ The MAILING DATE of this communication appears on the cover sheet with the correspondence address
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 GFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S. C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )□ Responsive to communication(s) filed on .

2a)^ This action is FINAL. 2b)D This action is non-final.

3) D An election was made by the applicant in response to a restriction requirement set forth during the interview on

; the restriction requirement and election have been incorporated into this action.

4) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213.

Disposition of Claims

5) ^ Claim(s) 27-67 is/are pending in the application.

5a) Of the above claim(s) 27-41 and 43-50 is/are withdrawn from consideration.

6) D Claim(s) is/are allowed.

7) |EI Claim(s) 42 and 51 -67 Is/are rejected.

8) D Claim(s) is/are objected to.

9) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

10)D The specification is objected to by the Examiner.

1 1 )□ The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1 .121(d).

12) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

13) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)DAII b)Q Some * c)Q None of:

1 .□ Certified copies of the priority documents have been received.

2. Q Certified copies of the priority documents have been received in Application No. .

3. Q Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attachment(s)

1) O Notice of References Cited (PTO-892)

2) O Notice of Draftsperson's Patent Drawing Review (PTO-948)

3) ^ Information Disclosure Statement(s) (PTO/SB/08)

Paper No(s)/Mail Date .

4) CD Interview Summary (PTO-413)

Paper No(s)/Mail Date. .

5) O Notice of Informal Patent Application

6) □ Other: .

U.S. Patent and Trademark Office

PTOL-326 (Rev. 03-11)

Office Action Summary

Part of Paper No./Mail Date 20120510

Application/Control Number: 10/597,633 Page 2

Art Unit: 3771

DETAILED ACTION

1. This office action is responsive to the amendment filed on 02/15/2012. As
directed by the amendment: claim 43 has been amended, no claims has been
cancelled nor added. However, amended method claim 43 and its depending claims
27-41 and 42-50 again are directed to a method claim that lacks unity of invention from
the apparatus claim because the apparatus as claimed can be used in a materially
different process of using that apparatus that does not require engaging first and
second actuators by a patient and by a non-therapist, respectively; and rehabilitating
said patient using said first actuator and said non-therapist. Accordingly, claims 27-41
and 43-50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
being drawn to a nonelected invention, there being no allowable generic or linking claim.

Thus, claims 42 and 51-67 are presently under consideration in this application.
Claim Rejections - 35 USC § 103

2. The text of those sections of Title 35, U.S. Code not included in this action can
be found in a prior Office action.

3. Claims 42, 51-67 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Horst (US 2004/0102723).

4. Re claim 66, Horst discloses a rehabilitation system configuration, comprising a
first rehabilitation device and other like devices (see abstract), the first rehabilitation
device is useful in helping someone in every day task of standing, walking, climbing
stairs and descending stairs at a first place of rehabilitation using an actuator that
includes a movement mechanism capable of applying a force (paragraph 25) adapted to

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Art Unit: 3771

interact with a motion of a patient's limb in a volume in at least two degrees of freedom
of motion (paragraph 40) of the actuator and capable of preventing substantial motion
(resistance) in any point in any direction in said volume; and, a second (other devices,
paragraph 12) rehabilitation device at a second place of rehabilitation (during walking)
that includes a movement mechanism operable by the patient's limb in at least two
degrees of freedom and capable of preventing substantial motion in any point in any
direction in said volume. Horst does not explicitly disclose that the movement
mechanism is "capable of applying a force that interacts with a motion of a patient's limb
in a volume of at least 30 cm in diameter". However, it would be obvious for one skill in
the art to design the device such that it would be capable of applying a force that
interacts with a motion of a patient's limb in a volume of at least 30 cm in diameter (such
as the knee joint) in order to accommodate various types of exercise in different joints.

5. Re claim 42, Horst discloses a wireless data link (paragraphs 46 and 74)
between the first rehabilitation device and the second rehabilitation device such that the
two rehabilitation devices can act in synchrony (bilateral weaknesses, paragraph 12).

6. Re claims 67, 51-54, Horst discloses a controller (paragraph 46) adapted to
control the actuator of the first rehabilitation device in accordance with a program
(paragraph 68); the first rehabilitation device at the first place of rehabilitation using a
first operational setting; and, the second rehabilitation device at the second place of
rehabilitation uses a second operational setting (paragraphs 14-15); wherein the first
and second places of rehabilitation are selected from a bed, a wheel-chair (paragraph
64), a clinic, a hospital and a home (paragraph 25); wherein the first operational setting

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Art Unit: 3771

includes applying a force that interacts with a motion of a patient's limb in at least three
degrees of freedom (paragraph 40, hip and shoulder joints) and the second operational
setting includes applying a force that interacts with a motion of a patient's limb in two
degrees of freedom (paragraph 40, elbow and knee joints);

7. Re claims 55-57, Horst teaches that the device(s) can be operated in a number
of modes: assist mode for enhancing mobility and resist mode for rehab and strength
training and that an individual can be fitted with more than one device to assist different
muscles and to compensate for weakness in a group of muscles (paragraph 12), thus
would suggest that the first operational setting would include a software set and the
second operational setting includes having only a portion of the software set ((different
modes, paragraph 68); wherein the first operational setting includes having a software
set and the second operational setting includes having a different software set (different
modes, paragraph 68); wherein the first operational setting includes a set of modes and
the second operation setting includes having only a portion of the set of modes; wherein
the first rehabilitation device is provided with a first display type and the second
rehabilitation device is provided with a different display type (paragraph 46, display
panel or lights).

8. Re claims 58-60, Horst teaches that wherein the second rehabilitation device is
adapted for the second place of rehabilitation (up and down the stairs at home,
paragraph 25); wherein the second rehabilitation device is adapted by providing mobility
(paragraph 12); wherein second first rehabilitation device is adapted by changing its

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Art Unit: 3771

size relative to the first rehabilitation device(different types of braces with different
lengths, paragraph 74).

9. Re claims 61-65, Horst teaches that wherein the first and second rehabilitation
devices are connected in a network; wherein the network is provided with a database
shared between at least the first and second rehabilitation devices (paragraphs 69-73);
wherein the system is adapted to generate a report on the patient from the first and
second rehabilitation devices; wherein the first rehabilitation device and the second
rehabilitation device are monitored by the same therapist (paragraph 56); wherein the
first and second rehabilitation devices are adapted to be used by the same patient
(bilateral weaknesses, paragraph 12).

Response to Arguments

1 0. Applicant's arguments filed 02/1 5/201 2 have been fully considered but they are
not persuasive.

11. In response to applicant's argument that Horst fails to disclose an apparatus that
includes an actuator which provides movement in at least two degrees of freedom, the
examiner respectfully disagrees. Applicants' attention is directed to Horst's Para. [0040],
which clearly teaches that "Joints with more than one degree of freedom may have a
single device to assist/resist the primary direction" and thus the single device is
considered as "an actuator" which may include one or more actuators for providing
movement in at least two degrees of freedom. It is also noted that Horst's Para. [0041]
clearly teaches that during knee extension, the tibia is also rotated and therefore

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Art Unit: 3771

suggests that movement in at least two degrees of freedom can be provided by the
actuator.

1 2. In response to applicant's argument that the references fail to show certain
features of applicant's invention, it is noted that the features upon which applicant relies
(i.e., a rehabilitation device that includes a single actuator that provides movement in at
least two degrees of freedom) are not recited in the rejected claim(s). Although the
claims are interpreted in light of the specification, limitations from the specification are
not read into the claims. See In re Van Geuns, 988 F.2d 1 181, 26 USPQ2d 1057 (Fed.
Cir. 1993).

Conclusion

1 3. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
policy as set forth in 37 CFR 1 .1 36(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within
TWO MONTHS of the mailing date of this final action and the advisory action is not
mailed until after the end of the THREE-MONTH shortened statutory period, then the
shortened statutory period will expire on the date the advisory action is mailed, and any
extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later
than SIX MONTHS from the mailing date of this final action.

Application/Control Number: 10/597,633 Page 7

Art Unit: 3771

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Quang D. Thanh whose telephone number is (571)272-
4982. The examiner can normally be reached on Monday-Friday 9am-5pm.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Justine Yu can be reached on (571) 272-4835. The fax phone number for
the organization where this application or proceeding is assigned is 571 -273-8300.

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/Quang D. Thanh/

Primary Examiner, Art Unit 3771